Now that ICANN’s .XXX gTLD Sunrise registration periods are in full swing and companies are rushing to block their domains, attention is shifting back to what the repercussions of adding new gTLDs will be. Back in June, we wrote about ICANN’s announcement of expanding the number of top-level domains to include new brand-related terms such as .google, .apple, or more generic terms such as .music or .law.
Our Senior Account Manager, Jamila Hunte, mentions that “there is the staggering $185,000 initial application (and evaluation) fee that goes to ICANN plus an additional $25,000 per year administration fee. Next, add in legal and consulting fees, plus the cost to maintain the registry.” Experts have speculated costs to be more in the six digit area, starting at $500,000. This will probably put small firms out of the game. But for larger firms who own a key trademark, ICANN supporters feel these new gTLDs will help fight fraud, phishing, brand abuse and increase brand loyalty, saving them money in the long run.
Members of the international business community, on the other hand, are pointing out that the benefits of owning and managing a dot-brand domain do not out weight the risks associated with it. The problem they are highlighting is that most large corporations have numerous trademarks and they would have to register each one of them to prevent cybersquatting, with costs reaching the millions of dollars. Companies such as Ikea and Motorola have already expressed their concerns as they believe there will be little benefit for them but an increase in costs and in-house work for companies. In addition, when the floodgates open, there will be several hundreds of new top level domains. With so many trademarks in existence, there are bound to be trademark conflicts.
ICANN has explained that there will be security measures put in place as well as high barriers to entry to prevent such disputes. The main barrier will – of course – be the price set up to register your own gTLD. As mentioned before, this move will cost companies more than a pretty penny. The application process is designed to be extremely rigorous with various complex technical and business considerations that might condition a company’s desire to apply. In a recent edition of IP Counsel, their guest speaker Mary Wong, Professor of Law at the University of New Hampshire School of Law, mentioned that in order to satisfy the need for defensive registration, ICANN has in place two RPMs (Right Protection Mechanisms); the UDRP or Uniform Dispute Resolution Policy and a more recent URS or Uniform Rapid Suspension. Both will adequately protect the valid and legitimate concerns of trademark owners. Companies will face the decision of either to go through the entire process of registering their own dot-brand or risk spending time and resources litigating a dispute with a possible cybersquatter in the near future.
Regardless of what measures ICANN or any governing agency put in place, it will always be the company’s responsibility to look after its own interests and brand reputation. Acquiring a dot-brand is an important decision and one that needs to be addressed fairly quickly, but it is up to the company’s management team to decide if a dot-brand is exactly what you need and what difference it makes to have it.
BrandProtect will continue to provide updates on the latest developments on the new gTLD’s as they unfold. Stay tuned for more updates and in the meantime protect your Rights, Revenue and Reputation!